WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Domain Administrator
Case No. D2010-1836
1. The Parties
The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Domain Administrator, of Jordan, Jordan.
2. The Domain Name and Registrar(s)
The disputed domain name <guccijewellery.com> (the “Disputed Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2010. On November 1, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On November 1, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on December 8, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is part of the Gucci Group which belongs to the French conglomerate Pinault-Printemps-Redoute. The Gucci Group founded the Gucci Fashion House in 1921 as a leather goods company and luggage store in Florence. The Complainant owns the trade mark GUCCI which is used by the Gucci Group on its products. The products have seen significant commercial success over the years. The product range has extended to other high fashion and leather products including clothes, shoes, jewellery, eyewear and fragrances. The Gucci Group has expanded its stores internationally including to cities like New York, London, Paris, Tokyo and Hong Kong.
The Complainant has invested substantially in advertising the trade mark GUCCI around the world. The Complainant has been ranked 46th and 44th in 2007 and 2010 respectively by Interbrand.
The trade mark GUCCI is registered in various jurisdictions including the following:
Trade mark no
January 13, 1977
March 30, 1977
April 1, 1996
February 9, 1980
The Complainant has also registered over 400 domain names comprising the word GUCCI including <gucci.com> and <gucci-group.com>. The Complainant’s products, including jewellery, are advertised and offered for sale on their website at “www.gucci.com”.
The Disputed Domain Name was registered on July 16, 2007, more than a decade after the trade mark registrations above. It resolves to a website comprising several links which redirect to other commercial websites including
(1) The Tiffany official website at “www.tiffany.it”
(2) A watch wholesale website at “www.watchimport.com” offering watches under the PUMA trade mark
(3) The Complainant’s official website
(4) A website at “www.net-a-porter.com” redirected from a link entitled “Gucci Online” which offers luxury fashion products
(5) a website promoting hotel services at “www.bbplanet.it”
The Complainant sent a letter to the Respondent on May 26, 2010 by email and registered mail requesting that the Respondent cease use of and transfer the Disputed Domain Name. A delivery receipt was generated for the email but the registered mail was returned unclaimed. The Respondent did not reply. The Complaint sent a reminder to the Respondent on July 8, 2010 by email and registered. The email bounced and the registered mail was again returned.
5. Parties’ Contentions
The Complainant contends that:
(1) The Disputed Domain Name is identical or confusingly similar to the trade mark GUCCI. It incorporates the whole of the trade mark GUCCI. The non-distinctive element “jewellery” does not affect the confusing similarity and increases the likelihood of confusion;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not a licensee or authorized by the Complainant to use the trade mark GUCCI. The Respondent is not commonly known by the Disputed Domain Name. The Respondent has not provided any evidence of use of the Disputed Domain Name in connection with a bona fide offering of goods or services; and
(3) The Disputed Domain Name was registered and is being used in bad faith. GUCCI is a well known mark and it is inconceivable that the Respondent was unaware of its existence. The website resolved from the Disputed Domain Name provides sponsored links from which the Respondent earns commissions for visits and clicks. The Respondent did not comply with its obligations under paragraph 4 of the Registration Agreement to maintain “certain, true, current, complete and accurate” contact information.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in the proceeding, the Complainant must show that:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has trade mark rights in the trade mark GUCCI by virtue of the trade mark registrations identified in the Complaint. These trade mark registrations pre-date the registration of the Disputed Domain Name by over a decade.
The trade mark GUCCI is incorporated in its entirety in the Disputed Domain Name. The only difference between the Disputed Domain Name and the trade mark GUCCI is the suffix “jewellery”. The Panel agrees with the Complainant that “jewellery” is a descriptive and generic word referring to the nature of products offered on the website resolved from the Disputed Domain Name and the websites redirected by links on that website. The suffix does not successfully distinguish the Disputed Domain Name from the trade mark GUCCI.
Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the trade mark GUCCI. The first limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The Complainant has denied any relationship with the Respondent and there is nothing to suggest that the Respondent is commonly known by the Disputed Domain Name. The Respondent has declined to provide any explanation or demonstrate any circumstances which may suggest any rights or legitimate interests.
In the circumstances, in accordance with established principles, the Panel holds that the Complainant has shown a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since the Respondent has failed to rebut the prima facie case, the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
The Respondent is obviously aware of the trade mark GUCCI and the Complainant. There is no other logical explanation for the website resolved from the Disputed Domain Name to provide a link to the Complainant’s official website.
The Panel is unable to conclude that the links on the website resolved from the Disputed Domain Name are sponsored links which provide financial benefit to the Respondent as claimed by the Complainant. There is no evidence to support such a claim. However, it appears to the Panel that the website is a parking site. Even if the Complainant has not provided sufficient evidence of financial benefit, the passive holding of the Disputed Domain Name by using it to resolve to a parking site may amount to bad faith registration and use.
The past panel decisions that developed the concept of “passive holding” (eg, Guccio Gucci SpA v. Zhou Guodong, WIPO Case No. D2010-1695; Harrods Limited v. Zhang Fashu, WIPO Case No. D2010-0414; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) have identified the following factual markers which establish bad faith registration and use of a domain name that is essentially not used or used to resolve to a parking site:
(1) The domain name incorporates a well-known mark;
(2) The respondent is not a legitimate business undertaking (eg, the respondent is an individual);
(3) In view of the complainant’s trade mark rights, it is not possible to conceive of any plausible, legitimate, actual or contemplated use of the domain name by the respondent;
(4) There is no apparent evidence of actual or contemplated use of the domain name; and
(5) The respondent failed to address the complainant’s cease and desist letter and the complaint under the Policy.
The Panel does not doubt the well-known mark status of the trade mark GUCCI. Other panels have also concluded similarly (eg, , Guccio Gucci SpA v. Zhou Guodong, supra; Guccio Gucci SpA v. Mark O'Flynn, WIPO Case No. D2001-0270; Guccio Gucci SpA v. Bravia Stoli, WIPO Case No. D2009-1170; Guccio Gucci SpA v. Roberto Baggio, WIPO Case No. D2009-1196). The Respondent has assumed the name “Domain Administrator” which does not appear to be the name of a business undertaking but rather suggests that the Respondent is attempting to hide his identity behind a functional anonymous descriptor. It has already been established that the Respondent must know of the trade mark GUCCI and there is no evidence of actual or contemplated use of the Disputed Domain Name beyond resolution to a parking page. The Respondent has failed to respond to the Complainant’s cease and desist letter and this Complaint.
Therefore, all the markers of “passive holding” exist in the present circumstances. In addition, the sequence of events following the cease and desist letter of May 26, 2010 suggests that the Respondent does not wish to be contactable.
In view of the above, the Panel is satisfied that bad faith registration and use under the third limb of paragraph 4(a) is established.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <guccijewellery.com> be transferred to the Complainant.
Kar Liang Soh
Dated: January 5, 2011